Ideas. Inventions. Patents.
Law Office of Karen Dana Oster, LLC
Oregon Patent Attorney
Patent Attorney - Portland Metro Area including Lake Oswego, Portland, Tigard, Tualatin, Beaverton, Willsonville and other Oregon areas
Law Office of Karen Dana Oster, LLC
telephone (503) 810-2560, fax (503) 638-0367
PMB 506, 16869 SW 65th Avenue
Lake Oswego, OR 97035
karen@oregonpatent.com
Disclaimer: The information contained in these pages is for information purposes only and should not be construed as legal advice or legal opinion on any specific facts or circumstances. No attorney-client or other relationship will be created by visiting this site, sending an email, or placing a telephone call without an express written agreement that such a relationship has been formed. Please do not submit any confidential information or other particulars relating to a matter for which you seek legal representation. I am licensed to practice before the United States Patent and Trademark Office, the state of Oregon, and the state of California.
© 1992-2012 Karen Dana Oster
News
FEE INCREASES
In addition to the 15% Patent and Trademark Office (PTO) fee increase that has already been imposed as a result of patent reform, there is an upcoming anticipated fee increase in June of 2012. Some of the proposed fee increases are very significant. For example, there is a proposed increase of approximately 50% for filing fees, a proposed increase of approximately 85% for excess (more than three) independent claim fees, a proposed increase of approximately 70% for excess (more than twenty) total claim fees, and a proposed increase of approximately 25% - 60% for maintenance fees. Whereas in the past there was oversight by Congress and/or the Courts, the new patent reform laws (see below) effectively eliminate this oversight. Although the final fee schedule may be changed, you should expect additional fees from the USPTO. If you have an upcoming fee due, you should provide me with instructions and funds with sufficient time for me to make the payment to avoid the increase. You will be responsible for amounts charged by the PTO even if I quoted a lower fee at an earlier date.
PATENT REFORM
President Obama signed the Smith-Leahy Patent Reform Act on September 16, 2011. This act is the first large-scale reform to U.S. patent laws in 60 years. Although passed with “bipartisan support,” it is my feeling that this act will be detrimental to all but the largest of corporations and will not have the “benefits” touted by the Act’s proponents. Some of the provisions have already gone into effect (including a 15% increase in most patent fees). Other provisions will go into effect in the coming months (some will go into effect twelve or eighteen months after enactment). Practically speaking, what does this mean to patent applicants?
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Applicants should file fast and often. This is because this Act implements a first-inventor-to-file standard for patent approval.
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Consider paying the extra fee ($4,800, although possibly $2,400 for a small entity) for a “prioritized application.” There may be a limited number of prioritized applications available.
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Most applicants will not want to disclose their invention without filing at least a provisional application. Although, technically, there will be a one-year grace period for certain type of inventor disclosures, it will be difficult to overcome an earlier filing date. (Please talk to me if you are interested in “defensive publication.”)
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Start keeping track of ALL dates, methods, and other details pertaining to the disclosures of your invention. These dates will be significant. You should continue to keep standard inventor notebooks.
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Review your employment agreements.
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The last day to file a patent application that will be examined under the current “first to invent” laws is Friday, March 15, 2013. Applications filed after that date will be examined under the new “first to file” laws. Please note, however, that disclosures one year prior to that date may be very very relevant.
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Please check back for updates.
Older comments on reform:
On June 23, 2011, the House of Representatives passed H.R. 1249 moving this problematic legislation closer to enactment. The terms of the bill now need to be reconciled with the S. 23. Among other changes, this legislation changes the United States patent system from “first to invent” to “first to inventor file.” This legislation did nothing to eliminate patent fee diversion (in which for years Congress has been raiding PTO fees which can be equated to a tax on inventorship) and has allowed the PTO to have fee setting authority. It is my belief that this legislation will harm individual inventors and small businesses. Please note that despite assertions to the contrary, this does not harmonize the United States patent system with the patent systems of other countries. I highly recommend that you review this legislation. The following references may be instructive:
Older comments on reform:
On June 23, 2011, the House of Representatives passed H.R. 1249 moving this problematic legislation closer to enactment. The terms of the bill now need to be reconciled with the S. 23. Among other changes, this legislation changes the United States patent system from “first to invent” to “first to inventor file.” This legislation did nothing to eliminate patent fee diversion (in which for years Congress has been raiding PTO fees which can be equated to a tax on inventorship) and has allowed the PTO to have fee setting authority. It is my belief that this legislation will harm individual inventors and small businesses. Please note that despite assertions to the contrary, this does not harmonize the United States patent system with the patent systems of other countries. I highly recommend that you review this legislation. The following references may be instructive:
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http://www.youtube.com/watch?v=-lewaN3t29U (video - this is an old one, but it is only one minute and gets it right)
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http://www.youtube.com/watch?v=U2v5J6fNh2A (video - this one has a different take - it is to the tune of a nine inch nails song)
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http://www.aminn.org/patent-reform-act-2011-s23 (video - actually on the senate bill)
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http://inventorsvoice.blogspot.com/2011/03/patent-reform-2011-video-briefing.html (video - actually on the senate bill)
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web.wmitchell.edu/cybaris/wp-content/uploads/2010/04/PedersenWoo1.pdf (really detailed article with a great chart at the end - you may have to cut and paste this URL)
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I highly recommend that you contact your state representatives (http://www.house.gov/house/MemberWWW_by_State.shtml) and tell him/her that the proposed patent reform is bad for business, bad for the economy, and bad for the country. Visits, letters, and phone calls are the best way to contact them, but emails are better than nothing.
PATENTABILITY OF SOFTWARE & BUSINESS METHODS:
In order to be patentable, a claim must define an invention that (1) is considered "patentable subject matter" under 35 USC §101:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."
Thus, the threshold question is whether the inventive concept fits into one or more of the statutory categories: (a) process or method; (b) apparatus or machine; (c) article of manufacture; or (d) composition of matter. Various exceptions to statutory subject matter have been developed by the courts. According to the Supreme Court, abstract ideas, laws of nature, and natural phenomena are not statutory subject matter (they are judicial exceptions to statutory subject matter) and cannot be patented.
In Bilski v. Kappos, 561 U.S. ___ (June 28, 2010), the Supreme Court examined the issue of what is patentable subject matter under 35 USC §101. The majority held that §101 does not categorically exclude business method patents, but noted that "while §273 [of the patent statute] appears to leave open the possibility of some business methods patents, it does not suggest broad patentability of such claimed inventions." Although this case is specifically directed to business method patents, the decision may also be relevant to the patentability of inventions in the software and life sciences technologies.
The Supreme Court held that the machine-or-transformation test (a process or method claim is “patent eligible subject matter" if the claim is tied to a particular machine or apparatus, or transforms a particular article into a different state or thing) set forth in the Federal Circuit's decision (In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)) is not the sole test for determining the patent eligibility of a process. On the other hand, the Court found that the machine-or-transformation test is "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101.” Accordingly, patent practitioners will most likely continuing to draft claims taking the machine-or-transformation test into consideration.
The Supreme Court did affirm the Federal Circuit's rejection of Bilski’s patent claims (directed to a method of hedging losses in one segment of the energy industry by making investments in other segments of that industry, on the basis that the abstract investment strategy) as unpatentable subject matter.
OBVIOUSNESS:
In 2007, the Supreme Court decided KSR International Co. v. Teleflex Inc. This case addressed the obviousness requirement (35 U.S.C. Sec. 103) that patentees must meet in order to obtain patent protection. Although it is clear that the Supreme Court rejected the rigid adherence to known obviousness tests (for example, the “teaching, suggestion, or motivation test), the current test for obviousness is not clear. The Supreme Court set forth general principles (including that to be patentably non-obvious, an improvement must be more than a predictable use of prior art elements according to their established functions), but it did not provide any specific rules or tests on which we can rely. At this point, therefore, we will probably continue to use many of the same arguments we have been using to overcome obviousness rejections. Because this decision appears to give examiners greater leeway in analyzing “reasons to combine,” some arguments will fare better than others. For example, “teaching away” arguments (e.g. presenting evidence that the prior art teaches away from a claimed combination) most likely will be stronger arguments than arguments that one or more of the prior art references is “nonanalogous” (e.g. not in the same field of endeavor). Most experts believe that, if this ruling stands, it will be harder to obtain patents and harder to enforce issued patents. Without more data on how this case will be implemented and enforced (e.g. court rulings and prosecution experience with the Patent and Trademark Office), it is difficult or impossible to make determinations of patentability with any degree of certainty.